^:-.'v^# 



Trade=Marks 



CONTENTS. 

Digest of United States Law and Practice. . 6 to 17 

Digest of Practice in Foreign Countries 18 to 32 

Piracy of Trade-Marks Abroad 19, 31, 32 

Schedule of Charges — U. S. Registrations . . 3 

Schedule of Charges — Foreign Registrations 26,27,28 



WILLIAM E. RICHARDS 

COUNSELLOR AT LAW 

277 Broadway New York. N. Y. 

Telephone Worth 5255 Cable Address "Richstty Newyork* 



CepyrUht 1919 by William E. RIehards 



>->^ 



Trade-Marks 



CONTENTS. 

Digest of United States Law and Practice. . 6 to 17 
Digest of Practice in Foreign Countries. ... 18 to 32 

Piracy of Trade-Marks Abroad 19, 31, 32 

Schedule of Charges — U. S. Registrations . . 3 

Schedule of Charges — Foreign Registrations 26,27,28 



WILLIAM E. RICHARDS 

COUNSELLOR AT LAW 

277 Broadway New York, N. Y. 

Telephone Worth 5255 Cable Address "Richatty Newyork' 



Copyright 1919 by William E. Richards 



^%. 



NOTICE. 

The growing and, I may say, vital importance of the proper pro- 
tection of the trade-marks and trade names of American manufacturers, 
especially in foreign countries owing to the great and increasing expansion 
of the foreign trade of the United States, has induced me to-pubHsh this 
little booklet for the convenience of my correspondents. 

This work is not intended to be exhaustive in any particular. It is 
rather designed to serve as a convenient handbook, presenting in concise 
form for ready reference the features most necessary to be available to 
lawyers and manufacturers to enable them to readily understand the 
leading points of the law and practice on this important subject matter, 
and to take the necessary steps to secure protection for this class of 
property. 

I am always glad to furnish correspondents with more complete and 
precise information upon any specific questions either of law or practice, 
and with respect to any country or countries. 



William E. Richards. 



New York, March i, 1919. 



MAV 14 1919 V^ 



©aA526653 



SCHEDULE OF CHARGES. 
United States Trade-Marks. 

All charges are payable in advance, cash with order, unless otherwise 
agreed upon. 

The charges include preparation and filing of necessary papers, pay- 
ment of government fees, and prosecution of applications in ordinary 
cases, but do not include special services in appeals, or contested cases 
such as oppositions, interferences or cancellations, the charges for which 
cannot be determined in advance, but which will be fair and reasonable 
for the services rendered. 

Copies of the trade-mark are to be supplied to us. 

Searches of prior registrations $7-50 

Application for Registration: 

One mark, in single class from $35.00 

Each additional class, for same mark " 35-00 

Each additional mark, in same class " 35-00 

Application for Renezvals, each mark " 25.00 

Assignments: 

Preparing and recording, for 300 words or under " 5.00 

Preparing and recording, over 300 and under 1,000 

words " 7.50 

Preparing and recording, if over 1,000 words " 12.50 

Appeals from decisions examiner of trade-marks " 50.00 

Appeals from decisions examiner of trade-marks from 50.00 

" From decisions examiner of interferences " 50.00 

" Pro forma, to Commissioner " 25.00 

" To Commissioner of Patents " 75-00 

" To Court of Appeals of District of Columbia " 100.00 

^ . . { As these involve more or less protracted proceedings 

Uppositions, J jjgfQj-g ^j^e examiner of interferences, charges cannot be 
Interferences, \ named in advance but will be subject to agreement in 
Cancellations. ( ^^^^ ^^^^^ 



SELECTION OF TRADE-MARKS. 

Believing that a few suggestions upon this point may be appreciated, 
I offer the following ideas. 

First: It will be obvious that the most desirable and effective marks 
are those that are, (a) simple in design; (b) easy to understand and re- 
member; (c) attractive in appearance; and, (d) if the mark is an arbi- 
trary word, easy to speak, spell, and attractive in sound. 

Second: It must always be remembered that marks that are descrip- 
tive, or relate to the character or quality of the goods, or that are descrip- 
tive of the container or package, as well as geographical names, except 
when the latter are used in a fanciful or arbitrary sense, are unregisterable. 

The misspelling of an unregisterable word, or its arrangement in a 
fanciful design, does not relieve it from objection if it conveys infor- 
mation of a descriptive character. 

A trade-mark will not be registered if it resembles a known mark 
already in use by another for goods of the same descriptive qualities, or 
so closely resembles such a mark as to be likely to cause confusion. 
Deceptive or misleading marks are unregisterable. 

A trade-mark cannot be a color, a shape, a package or a container, 
and descriptive words and terms taken from a foreign language are un- 
registerable. 

Third: The following are types of trade-marks that are proper sub- 
jects of registration. 

Arbitrary numbers, letters, or symbols, or combination thereof with 
a word or words, when not descriptive, or trade terms relating to the 
articles with which they are used. 

A word or words used in a fancy (non-descriptive) sense, such as 
*'Onyx" for hosiery, or ''Velvet" for tobacco, and coined words or phrases, 
such as "Kodak" for cameras, ''Socony" for oil products, and suggestive 
words, if not descriptive, are very desirable marks. 

Pictorial marks are ordinarily registerable, and are frequently valu- 
able, as for example the domino of the Crystal Domino Sugar, the 
chocolate girl of Baker's Chocolate, and many others. Such marks are 
often very suggestive without being descriptive. 

Personal names are registerable when they are written, printed, or 
stamped in such a way that the peculiarities of the writing, printing or 
design constitute the most particular feature of the mark. Autographic 
signatures, either with or without a portrait of the individual are register- 
able if so individualized. Names of historical persons or mythological 
characters may be registered, but the name of a living person cannot be 
used without consent. 

Portraits of living persons may be used by consent, and portraits of 
historical persons are frequently used. 

Fourth: Lastly, a trade-mark is not registerable if its registration 
would be against public policy, or if its subject matter is scandalous or 
immoral, or if it is applied to articles harmful in themselves. 



TRADE-MARKS IN THE UNITED STATES. 
Methods of Protection. 

Common Law and State Laws. 

The right to the exclusive use of and property in trade-marks has 
always been recognized under the common law in the chancery courts. 
Many of the States have also enacted special Statutes for the protection 
of such property. 

The right to, and property in a mark, commences with the adoption 
and use of the mark in question, provided the party adopting it is the first 
to make use of it for the particular class of goods to which he has 
applied it. 

Some well-known attorneys advise their clients to depend upon the 
above form of protection, upon the ground that registration of the mark 
might have a limiting effect in connection with proceedings instituted 
under the State statutes, or under the common law, for infringement of 
the owner's rights; that registration is only of importance as giving a 
statutory right to bring suit for infringement, and that the use of the 
mark at a date earlier than that set up by another would have to be 
established before success in a suit could be insured. 

I am not in favor of the above practice. In my opinion the ad- 
vantages of registration are pronounced and important for the reasons, 
amongst others, stated in the next paragraph. 

By Registration. 

Registration of trade-marks may be effected in the United States 
Patent Office under the Act of February 20, 1905, as amended by the 
Acts of May 4, 1906, March 2, 1907, February 18, 1909, and Act of 
February 15, 1911. 

The effect of registration under these laws affords the following 
benefits : 

(a) Establishes prima facie evidence of ownership. 

(b) Establishes the right to bring suit for infringement in the 
United States Courts, regardless of the question of residence. 

(c) Enables the owner to effect registration in foreign countries 
where proof of registration in the owner's home country is a prerequisite. 

(d) Enables the owner to prevent the admission into the United 
States of foreign manufactured articles of the same class bearing the 
same or similar marks. 

(e) Where a prior application for registration has been regularly 
filed in a foreign country, which by treaty, convention or law affords 
similar protection to citizens of the United States, an application in this 

5 



country, if filed within four months from the date of such foreign appH- 
cation, is accorded the same force and effect as if filed on the date of said 
foreign application. 

DIGEST OF LAW AND PRACTICE. 

What May be Registered. 
Any mark by which the goods of the owner of the mark may be dis- 
tinguished from other goods of the same class, which is used in commerce 
with foreign nations or among the several States or with Indian tribes, 
subject, however, to the limitations set forth in the next paragraph. 

What May Not be Registered. 
The following marks are not registerable : 

(a) Those which consist of or which comprise immoral or scan- 
dalous matter. 

(b) Those which consist of or comprise the flag or coat of arms or 
other insignia of the United States, or any simulation thereof, or of any 
State or municipality, or of any foreign nation, or of any design or picture 
that has been or may hereafter be adopted by any fraternal society as 
its emblem, unless it is shown to the satisfaction of the Commissioner that 
the mark was adopted and used as a trade-mark by the applicant or ap- 
plicant's predecessors, from whom title is derived, prior to the date of 
its adoption by such fraternal society as its emblem. By Act of Jan. 5, 
1905, the sign of the Red Cross of America is prohibited from use for 
advertising or trade purposes. 

(c) Marks which are identical with a registered or known trade- 
mark owned and in use by another for merchandise of the same descrip- 
tive properties, or which so nearly resemble such a trade-mark as to be 
likely to cause confusion or mistake in the mind of the public, or to 
deceive purchasers. 

(d) Marks which consist merely in the name of an individual, firm, 
corporation, or association, not written, printed, impressed, or woven in 
some particular or distinctive manner, or in association with a portrait of 
the individual, but this does not prevent the registration of a trade-mark 
otherwise registerable because of its being the name of the applicant or 
a portion thereof. 

(e) Mere words or devices which are descriptive of the goods with 
which they are used, or of the character or quality of such goods, or 
merely a geographical name or term. 

(/) No portrait of a living individual may be registered as a trade- 
mark except by the consent of such individual evidenced by an instrument 
in writing. 



{g) No trade-mark will be registered which is used in unlawful 
business, or upon any article injurious in itself, or which has been used 
with the design of deceiving the public in the purchase of merchandise, 
or which has been abandoned. 

Registrations Under Ten-^Year Rule. 

Nothing in the preceding paragraph will prevent the registration of 
any mark used by the applicant or his predecessors, or by those from 
whom title to the mark is derived, in commerce with foreign nations or 
among the several States or with Indian tribes, which was in actual and 
exclusive use as a trade-mark of the applicant, or his predecessors from 
whom he derived title, for ten years next preceding February 20th, 1905. 

Who May Effect Registration. 

Any owner of a trade-mark used in commerce with foreign nations, 
or among the several States, or with Indian tribes, provided : 

(a) Such owner is domiciled within the territory of the United 
States ; or, 

{h) Resides in or is located in any foreign country which, by treaty, 
convention, or law, affords similar privileges to the citizens of the United 
States; but in such case the applicant must have registered the mark in 
the foreign country in which he resides or is located, and file a certified 
copy of the certificate of such registration in the Patent Office. 

(c) Any owner who though domiciled in a foreign country has a 
manufacturing establishment within the territory of the United States, 
may register marks used on the products of such establishment. 

The word "owner" applies to and includes firms, corporations, and 
associations, as well as a natural person. 

SEARCHES AS TO NOVELTY. 

In order to ascertain whether any certain trade-mark has already 
been appropriated and registered for a specified class of goods, it is usual 
and advisable, to make a search covering the registered marks in such 
class. This may be quickly done, only a few days' time being required, 
and the cost is moderate. (See Schedule of Charges, page 3.) 

APPLICATION FOR REGISTRATION. 

Documents Required. 
A complete application for the registration of a trade-mark comprises 
the following parts : 

(a) Petition, signed by the applicant. A power of attorney, if an 
attorney is appointed, should be included in this document. 

7 



(b) Statement, signed by the applicant. This must specify the 
name, domicile, location, and citizenship of the party applying, and if the 
applicant be a corporation, or association, the State or nation under the 
laws of which organized; the class of merchandise, and the particular 
description of the goods comprised in such class upon which the trade- 
mark has actually been used ; a statement of the manner in which the same 
is applied and affixed to the goods, and the length of time it has been used 
upon such goods. A description of the mark itself shall be included if 
required by the Commissioner, or if desired by the applicant, but in the 
latter case it must be of a character to meet the approval of the Com- 
missioner. 

(c) Declaration, signed by the appHcant, under oath, before any 
person within the United States authorized by law to administer oaths, 
or, in a foreign country, before any minister, charge d'affaires, consul, or 
commercial agent holding commission under the Government of the 
United States, or before any notary public, judge, or magistrate having 
an official seal and authorized to administer oaths in the foreign country 
in which the applicant may be, whose authority shall be proved by the 
certificate of a diplomatic or consular officer of the United States, the 
declaration being attested in all cases by the proper official seal of the 
officer before whom the same is made. When the person before whom 
the declaration is made is not provided with a seal, his official character 
must be established by competent evidence, as by a certificate of a clerk 
of a court of record, or other proper officer having a seal. 

(d) Drawing of the trade-mark on bristol board, substantially the 
same requirements and rules as for patents. 

(e) Five specimens (or facsimiles, when, from the mode of apply- 
ing or affixing to the goods, specimens cannot be furnished) of the trade- 
mark as actually used upon the goods. A few extra copies should be 
added for the attorney's use. 

(/) The government fee of ten dollars. 

Applicants in Foreign Countries. 

(g) If the appHcant resides or is located in a foreign country he 
must, unless the application relates to a trade-mark used upon goods 
made in a manufacturing establishment within the United States, set forth 
that the trade-mark has been registered by him, or that an application for 
registration thereof has been filed by him in the foreign country in which 
he resides or is located, and give the date of such registration or applica- 
tion. A certified copy of the certificate of such registration must be filed 
before the certificate of registration in this country will be issued. 

(h) If the applicant resides or is located in a foreign country he 
must, before the issuance of the certificate of registration, file a notice in 
writing designating some person residing within the United States on 



whom process or notice of proceedings affecting the right of ownership 
of the trade-mark may be served with the same force and effect as if 
served upon the apphcant or registrant in person. 

PROCEDURE IN PATENT OFFICE. 

Examination. 

Applications are examined as to form and merits. When the ex- 
aminer of trade-marks finds reasons for objections or refusal of registra- 
tion the applicant is notified, the reasons for objection or refusal stated, 
and such information and references given as may be useful in the fur- 
ther prosecution, if any. 

If it appear that registration is proper the mark will be published in 
the Official Gazette at least thirty days prior to the date of registration to 
permit of opposition being filed by parties believing they would be 
damaged by such registration. If no notice of opposition is filed within 
thirty days' time, notice of the allowance of the application is given, and 
a certificate of registration will be issued and bear date as of the fourth 
Tuesday following the first Thursday thereafter. 

Amendments. 

The statement may be amended to correct informalities, or to avoid 
objections made, or for other reasons arising in the course of examination, 
but no amendments may be made to the description or drawing unless 
warranted by something in the specimens or facsimiles originally filed. 
A declaration cannot be amended. If necessary, a substitute declaration 
may be filed. 

Amendments may be made after allowance of an application, if the 
case has not been printed, on the recommendation of the examiner, ap- 
proved by the Commissioner, without withdrawing the case from issue. 

Oppositions. 

Any person who believes he would be damaged by the registration of 
a mark may oppose the same by filing a written notice of opposition, ac- 
companied by the fee of ten dollars, stating the grounds therefor, within 
thirty days after the publication in the Official Gazette of such mark. 
This notice of opposition must be verified by the person filing the same 
before one of the officers designated to take declarations. (See Docu- 
ments Required, above.) 

An opposition may be filed by a duly authorized attorney, but must be 
duly verified by the opposer, within a reasonable time after such filing, 
or it will be null and void. 

In case of opposition the examiner of interferences takes charge of 
the case and gives notice to the applicant or registrant, who must make 

9 



answer at such time, not less than thirty days from the date of the notice, 
as shall be fixed by the examiner. The practice in opposition cases fol- 
lows, as nearly as possible, the practice in interference proceedings. 

Interferences. 

An interference will be declared whenever an application is made for 
the registration of a trade-mark which is substantially identical with a 
mark appropriated to goods of the same descriptive properties for which 
a certificate of registration has been issued- to another, or for which ap- 
plication for registration has been previously made by another, or which 
so nearly resembles such trade-mark, or a known trade-mark owned and 
used by another, as, in the opinion of the Commissioner, is Hkely to be 
mistaken therefor by the public. 

All preliminary questions must have been settled before such declara- 
tion, the mark must have been decided to be registerable, and it must have 
been published at least once in the Official Gazette. 

The practice follows, as nearly as practicable, the practice in inter- 
ferences in patent matters. 

If two or more applicants claim substantially the same registerable 
mark, and the application of one of them is ready for publication, the 
examiner may require the other applicants to put their applications in 
condition for publication within a specified time in order that an inter- 
ference may be declared, and if any party fail to do so, the declaration 
of interference will not be delayed, but the application of such party will 
be held for revision and restriction after final judgment, subject to other 
interferences. 

The examiner of interferences may, either before or in his final 
decision, direct the attention of the Commissioner to any matter which 
cannot be acted upon by him, which in his opinion precludes a proper 
determination of questions raised by the proceedings, or amounts to a 
statutory bar to the registration of the mark. In such case the Commis- 
sioner may, before judgment, suspend the interference or opposition and 
remand the case to the examiner of trade-marks for his consideration of 
such matters. If the case be not so remanded, the examiner of trade- 
marks will, after judgment, consider any matter affecting right to regis- 
tration which may have been brought to his attention, unless the same 
shall have been previously disposed of in the proceeding. 

Motions may be made to dissolve an interference upon the ground 
that, (a) no interference in fact exists ; (b) that there has been such ir- 
regularity in declaring the same as will preclude a proper determination 
of the question of the right of registration; (c) or denying the register- 
ability of an applicant's mark. 

10 



Such motions, and all motions of a similar character, should be made, 
if possible, not later than the thirtieth day after the notices of the declara- 
tion of interference have been mailed, and should be accompanied by a 
motion to transmit the same to the examiner of trade-marks. The ex- 
aminer of interferences will thereupon notice the latter for hearing upon 
a day certain. 

When in proper form the motion to dissolve will be transmitted for 
determination to the examiner of trade-marks, who will fix a day certain 
for the hearing of the motion upon the merits, and give notice thereof 
to all the parties. 

If a stay of proceedings is desired, a motion therefor should accom- 
pany the motion for transmission. 

Motions to shift the burden of proof should be made before the 
examiner of interferences for his determination, from whose decision 
thereon there is no appeal, though the matter may be reviewed on appeal 
from the final decision upon the question of priority. 

The decision of the examiner of trade-marks, upon a motion for 
dissolution, is binding upon the examiner of interferences unless reversed 
or modified upon appeal. 

All preliminary questions having been settled, terms are fixed by the 
examiner within which testimony may be taken by all the parties, and, the 
testimony having been duly filed, determination is made as to the facts as 
to the adoption and use, and the rights of the several parties, the first to 
adopt and use the mark being entitled to registration thereof. 

Caxcellatioxs. 

Any person, deeming himself to be injured by the registration of a 
trade-mark, may, at any time, make application for the cancellation of 
such registration. The application must state the grounds for cancel- 
lation, and is required to be filed in duplicate, and must be verified by the 
applicant before one of the officers named under "Declaration" on page 8. 

The examiner of interferences will then give notice thereof to the 
registrant of the mark, who must make answer at such time, not less than 
thirty days from the date of the notice, as shall be fixed by the examiner. 

The proceedings follow, as nearly as practicable, the practice in 
interferences in patent matters. 

If it appears, after a hearing, that (a) the registrant was not entitled 
to the use of the mark at the date of his application for registration there- 
of, or, (b) that the mark is not used by the registrant, or, (c) that it has 
been abandoned, and the examiner of interferences so decides, the Com- 
missioner will cancel the registration of the mark, unless appeal be taken 
from such decision within the time limit fixed. 

(See also "Interfering Registered Trade-Marks," page 14.) 

11 



Appeals. 

An appeal may be taken to the Commissioner by petition upon any 
proper question which has been acted upon by the examiner of trade- 
marks, not involving the merits of the mark claimed, the refusal of regis- 
tration thereof, or a requirement for division, without payment of a gov- 
ernment fee. A time will be fixed for hearing such petition, and the ex- 
aminer required to furnish a written statement of the grounds of his 
decision upon the matters averred in such petition, and furnish a copy 
thereof to the petitioner, within five days after being notified of the order 
fixing the day of hearing. 

From an adverse decision of the examiner of trade-marks upon an 
applicant's right to register a trade-mark, or to renew a registration, or 
from a decision of the examiner of interferences, an appeal may be taken 
to the Commissioner upon payment of a fee. 

From an adverse decision of the Commissioner in the cases named 
in the last paragraph only, an appeal may be taken to the Court of Ap- 
peals of the District of Columbia in the manner prescribed by the rules 
of that court. 

Date and Duration of Registil\tion. 

Certificates of registration for registerable trade-marks are issued 
after allowance and publication of the mark in the Official Gazette. The 
weekly issue closes on Thursday, and certificates of registration of that 
issue bear date as of the fourth Tuesday thereafter. 

A certificate of registration remains in force for twenty years from 
its date unless the trade-mark has been previously registered in a foreign 
country, in which case such certificate ceases to be in force on the day on 
which the mark ceases to be protected in such foreign country, and in no 
case remains in force more than twenty years unless renewed. 

Old Registrations. 

Certificates of registration in force on the first day of April, 1905, 
will remain in force for the periods for which they were issued, and are 
renewable under the provisions, conditions, and for the periods of time, 
prescribed by the present law. 

Renewal of Registration. 
A certificate of registration may be renewed from time to time for 
like periods, upon application by the registrant, his legal representatives, 
or transferees of record in the Patent Office, and upon payment of new 
fees. Such application may be made at any time not more than six months 
prior to the expiration of the period for which the certificate of registra- 
tion was issued or renewed. 

12 



Assignments. 

Every registered trade-mark, and every mark for the registration of 
which appHcation has been made, together with the appHcation for regis- 
tration thereof, is assignable in connection with the good-will of the busi- 
ness in which the mark is used. Such assignment must be in writing, and 
duly acknowledged according to the laws of the country or State in which 
the same is executed. 

An assignment is void as against any subsequent purchaser for a 
valuable consideration, without notice, unless it is recorded in the Patent 
Office within three months from its date. 

A certificate of registration may be issued to the assignee of an appH- 
cant, provided the assignment is of record in the Patent Office. 

Infringements. 

The registration of the trade-mark is prima facie evidence of owner- 
ship. Any person who shall, without the consent of the owner thereof, 
reproduce, counterfeit, copy, or colorably imitate any such trade-mark and 
affix the same to merchandise of substantially the same descriptive proj> 
erties as those set forth in the registration, or to labels, signs, prints, 
packages, wrappers, or receptacles intended to be used upon or in connec- 
tion with the sale of such merchandise, and shall use, or have used, such 
reproduction, counterfeit, copy, or colorable imitation in commerce among 
the several States, or with a foreign nation, or with the Indian tribes, 
shall be Hable to an action for damages therefor at the suit of the owner 
thereof. 

Exemplary Damages. 
The court may enter judgment in any such action, in which a verdict 
is rendered for the plaintiff, for any sum above the amount found by the 
verdict as the actual damages, according to the circumstances of the case, 
not exceeding three times the amount of such verdict, together with the 
costs. 

Jurisdiction of Courts. 

The circuit and territorial courts of the United States and the Su- 
preme Court of the District of Columbia have original jurisdiction, and 
the circuit courts of appeals of the United States and the Court of Ap- 
peals of the District of Columbia have appellate jurisdiction of all suits 
at law or in equity respecting registered trade-marks, without regard to 
the amount in controversy. 

Writs of certiorari may be granted by the Supreme Court of the 
United States for the review of cases in the same manner as provided for 
patent cases. ' 

13 



Injunctions. 
The several courts vested with jurisdiction have power to grant in- 
junctions, to prevent the violation of any right of the owner of a regis- 
tered trade-mark, on such terms as the court may deem reasonable, and 
may enforce the same by proceedings to punish for contempt, or other- 
wise. 

Accounting for Profits — Damages. 

Upon a decree being rendered in any such case for wrongful use of a 
trade-mark the complainant is entitled to recover, in addition to the profits 
to be accounted for by the defendant, the damages the complainant has 
sustained thereby, and the court will assess the same or cause the same 
to be assessed under its direction. The court may also increase such 
damages, in its discretion, as stated under "Exemplary Damages." 

In assessing profits the plaintiff is only required to prove defendant's 
sales only ; the defendant must prove all elements of cost necessary. 

Seizure of Counterfeits. 

In any case involving the right to a registered trade-mark, in which 
the verdict has been found for the plaintiff, or an injunction issued, the 
court may order that all labels, signs, prints, packages, wrappers, or re- 
ceptacles in the possession of the defendant, bearing the trade-mark of 
the plaintiff or complainant, or any reproduction, counterfeit, copy, or 
colorable imitation thereof, be delivered up and destroyed. 

Exceptions. 
No action or suit can be maintained under the provisions of the 
trade-mark laws in any case where the mark is used in unlawful business, 
or upon any article injurious in itself, or where the mark has been used 
with the design of deceiving the public in the purchase of merchandise, 
or has been abandoned, or upon any certificate of registration fraudulently 
obtained. 

Fraudulent Registrations. 

Any person who procures registration of a trade-mark, or entry 
thereof, by a false or fraudulent declaration or representation, oral or in 
writing, or by any false means, is liable to pay any damages sustained in 
consequence thereof to the injured party, to be recovered by an action 
on the case. 

Interfering Registered Trade-Marks. 

Whenever there are interfering registered trade-marks, any person 
interested in any one of them may have relief against the interfering 

14 



registrant, and all persons interested under him, by suit in equity in the 
United States courts. The court, on notice to adverse parties, and other 
due proceedings had according to the course of equity, may adjudge and 
declare either of the registrations void in whole or in part according to 
the interest of the parties in the trade-mark, and may order the certificate 
of registration to be delivered up to the Commissioner of Patents for 
cancellation. 

Counterfeited Marks or Names — Prohibition of Entry. 

No article of imported merchandise which shall copy or simulate the 
name of any domestic manufacture, or manufacturer or trader, or of any 
manufacturer or trader located in any foreign country which, by 
treaty, convention or law affords similar protection to citizens of the 
United States, or which shall copy or simulate a duly registered trade- 
mark, or bear a name or mark calculated to induce the public to believe 
that the article is manufactured in the United States, or that it is manu- 
factured in any foreign country or locaHty other than in the country or 
locality where it is in fact manufactured, will be admitted to entry at any 
customs-house of the United States. 

The act does not affect names or trade-marks previously recorded in 
the Treasury Department, and as to them the protection granted so far as 
concerns prohibition of importation continues. 

The act does not appear to make it compulsory for manufacturers 
or traders to register names (not trade-marks) in the Patent Office, in 
order to prevent illegal importations, but they are required to obtain due 
registration of their trade-marks, before the Treasury Department can act 
with respect thereto. 

In order to aid the officers of the customs in enforcing this pro- 
hibition, the manufacturer or trader should make application to the 
Treasury Department, stating the name of the owner, his residence, and 
the locality in which his goods are manufactured, and in case of trade- 
marks a certified copy of the certificate of registration must be filed, and 
the names of the ports to which facsimiles should be sent should be 
given. A sufficient number of facsimiles should accompany the applica- 
tion to provide one copy for each port named with ten additional copies 
for the files of the department. 

In case of the name of a domestic manufacture, manufacturer or 
trader (not trade-mark), proper proof of ownership, and of the country 
or locality in which the goods are manufactured must be filed, which 
must consist of the affidavit of the owner or one of the owners, certified 
by an officer entitled to administer oaths and having a seal. (See 
"Declarations," page 8.) 

15 



Marking Required. 

Registrants of trade-marks must give notice to the public of such 
registration, either by affixing to the mark the words "Registered in U. S. 
Patent Office," or "Reg. U. S. Pat. Off.," or when, from the character or 
size of the trade-mark, or from its manner of attachment to the article to 
which it is appropriated, this cannot be done, then by affixing a label con- 
taining a like notice to the package or receptacle wherein the article or 
articles are inclosed. 

In any suit for infringement by a party failing to give notice as 
above, no damages shall be recovered, except on proof that the defendant 
was duly notified of infringement, and continued the same after such 
notice. 

CLASSIFICATION OF MERCHANDISE. 

Below I give the official classification of merchandise for the purposes 
of registration. It should be remembered that each registration embraces 
only the goods named in the application, and in a single class only. An 
applicant may, at his option, include any or all goods in such class, pro- 
vided that the mark has been actually used upon all the goods specified. 

Registration In More Than One Class. 

Where a trade-mark has been used upon goods included in more than 
one class, separate applications should be filed for each such class to 
cover the goods included in that class. 

Series of Marks. 

Where a manufacturer or trader has used two or more trade-marks 
upon goods embraced in a class, separate applications are required for 
each of said marks, and where such marks have been used upon goods 
included in several distinct classes, separate applications are required for 
each mark in each of such classes. 

Classes. 

1. Raw or partly prepared materials. 

2. Receptacles. 

3. Baggage, horse equipments, portfolios and pocketbooks. 

4. Abrasive, detergent, and polishing materials. 

5. Adhesives. 

6. Chemicals, medicines, and pharmaceutical preparations. 

7. Cordage. 

8. Smokers' articles, not including tobacco products. 

16 



9- Explosives, firearms, equipments, and projectiles. 

10. Fertilizers. 

11. Inks and inking materials. 

12. Construction materials. 

13. Hardware and plumbing and steam-fitting supplies. 

14. Metals and metal castings and forgings. 

15. Oils and greases. 

16. Paints and painters' materials. 

17. Tobacco products. 

19. Vehicles, not including engines. 

20. Linoleum and oiled cloth. 

21. Electrical apparatus, machines, and supplies. 

22. Games, toys, and sporting goods. 

23. Cutlery, machinery, and tools, and parts thereof. 

24. Laundry appliances and machines. 

25. Locks and safes. 

26. Measuring and scientific appliances. 

27. Horological instruments. 

28. Jewelry and precious-metal ware. 

29. Brooms, brushes, and dusters. 

30. Crockery, earthenware, and porcelain. 

31. Filters and refrigerators. 

32. Furniture and upholstery. 

33. Glassware. 

34. Heating, lighting and ventilating apparatus, not including electrical 

apparatus. 

35. Belting, hose, machinery packing, and nonmetallic tires. 

36. Musical instruments and suppHes. 

37. Paper and stationery. 

38. Prints and publications. 

39. Clothing. 

40. Fancy goods, furnishings, and notions. 

41. Canes, parasols, and umbrellas. 

42. Knitted, netted, and textile fabrics. 

43. Thread and yarn. 

44. Dental, medical, and surgical appliances. 

45. Beverages, nonalcoholic. 

46. Foods and ingredients of foods. 

47. Wines. 

48. Malt extracts and liquors. 

49. Distilled alcoholic liquors. 

50. Merchandise not otherwise classified. 

Note: Class 18 was abolished February 24, 1909. 

17 



TRADE-MARKS IN FOREIGN COUNTRIES. 
Comparison of Practice. 

At the outset it should be noted that a marked difference exists be- 
tween the practice in the United States and that in foreign countries. 

In the United States adoption and use of a mark is necessary before 
registration can be effected. In foreign countries, almost without excep- 
tion, adoption and use is not a prerequisite to registration. 

In many foreign countries registration is either conclusive of owner- 
ship regardless of use, or becomes conclusive after a short time from the 
date of registration. 

Another very important point of difference should be noted. The 
same restrictions as to descriptive terms, geographical names and sur- 
names do not exist in many countries, and in many other countries the 
laws are more lenient in this regard than those in the United States. In 
countries such as the Argentine Republic, Chile, Uruguay, etc., such marks 
are frequently registered, and become very valuable for trading operations. 

Dangers of Failure to Register Marks Abroad. 

American manufacturers, traders, and exporters of merchandise to 
foreign countries run a very real and grave danger if they fail to register 
and protect their trade-marks in the various countries in which their goods 
are sold. 

Goods which are advertised, or become popular by use and sale in 
foreign markets, become known by their marks or names, and these are 
quickly imitated or counterfeited if the rightful owners do not properly 
protect them by registration. 

An even greater danger lies in the liability of the piracy of well- 
known marks by unscrupulous foreign traders, particularly enemy traders 
such as the German and Austrian, who, especially in late years, have not 
hesitated to use and register in their own names valuable marks belonging 
to American and other manufacturers, thereby acquiring the property in 
such marks in the foreign countries in which they are so registered, to the 
exclusion of the legitimate owners, who are thereby prevented from using 
their own lawful trade-marks or names in such countries. I have treated 
this subject more fully under "Piracy of Trade-Marks," below. 

If an owner fails or neglects to protect his trade-marks abroad until 
the happening of one or the other of the above events, he is face to face 
with the following facts : (a) he must either tamely submit to the flooding 
of his market with goods which are often very inferior, and which bear 
imitations or counterfeits of his name or marks; or, (b) in countries 
where registration is not conclusive of ownership, he must engage in 

18 



costly and often protracted litigation or negotiations to establish his 
ownership, and stop the imitation or counterfeiting; or, (c) in countries 
where registration is conclusive of ownership, he must either cease 
using his own marks, or be liable for damages for use thereof by the 
registrants, or acquire the right to the use thereof by negotiation or pur- 
chase, which has in the past, in many cases, been a very expensive and 
vexatious proceeding. 

PIRACY OF TRADE-MARKS. 

Owing to the fact that in many countries registration is conclusive 
of ownership, and is conclusive in other countries after a limited period of 
time, a practice has grown up among unscrupulous traders which may 
well be called "piracy." 

As illustrative of this fact I publish below an excerpt from the Com- 
merce Reports issued by the Bureau of Foreign and Domestic Commerce 
of the United States Department of Commerce. 

"The Necessity of Trade-Mark Registration Abroad. 

The apparent increase in the number of unauthorized applica- 
tions for the registration of American trade-marks abroad calls for 
an emphatic reminder of the necessity of early registration of valu- 
able trade-marks, especially in those foreign countries where the 
ownership of marks is based upon registration. The countries of 
Latin America have furnished a particularly profitable field for the 
registration of trade-marks for speculative purposes as most of those 
countries grant the exclusive right to use a mark to the first appli- 
cant without regard to its prior use by another. Nearly every issue 
of the official bulletins of some Latin-American countries contains 
applications for trade-mark registration that are evidently fraudulent 
or at least unauthorized. The names of automobiles, motor trucks, 
pharmaceutical preparations, and other articles the sale of which 
depends largely upon advertising and good will have been particu- 
larly subject to misappropriation, and recently a single firm applied 
for this registration of the trade-marks of six among the best-known 
American cars. If registration had been granted, it would have been 
practically equivalent to the acquisition of an exclusive agency for 
the importation of each of these six cars in one of the most important 
foreign markets for automobiles unless the manufacturers were will- 
ing to adopt a new trade-mark for that particular market. 

In another case the designation 'Tord American Products" was 
sought to be registered in a South American country for all classes 
of goods. The effect of this registration would probably have been 

19 



to give to the local registrant absolute control over the use of the 
word "Ford" on all goods sold in that country. This latter case is 
illustrative of the difficulties that may arise when a trade-mark used 
in the United States by various manufacturers for different classes 
of goods is registered abroad in such a way as to cover several of 
these classes. Even if the mark is registered in good faith by one 
entitled to its use, the form of registration may nevertheless prevent 
the use of the mark on a distinct kind of goods by another manufac- 
turer except with the consent of the prior registrant. 

Dangers of Registration in Name of Agent. 

A somewhat different but none the less embarrassing situation 
may be presented when a mark is registered in the name of the local 
agent of the American manufacturer or exporter. As long as the 
exclusive agency continues there are usually no difficulties, but 
should the principal desire to make a change in the agency arrange- 
ments he may find that the agent has it in his power to prevent the 
importation of the trade-marked goods except when consigned to 
him or under such terms as he may dictate. This danger has been 
further emphasized since the outbreak of the war by the experience 
of some exporters with agents of enemy nationality. The placing of 
the name of the agent on the Enemy Trading List has resulted in a 
suspension of shipments to the former agent, while the control of 
the trade-mark through registration in the name of the agent has 
prevented shipment from being made to any others except under 
a different mark. It is hoped that some relief from this difficulty 
may be obtained through a modification of the procedure for the 
cancellation of unauthorized registrations, but in the meantime no 
shipments of the trade-marked goods can be made to countries where 
firms of enemy nationality control the trade-mark. 

The applications for trade-mark registration published in the 
official gazettes of the countries where the most difficulties have been 
experienced are examined regularly in the Bureau of Foreign and 
Domestic Commerce in order, so far as possible, to discover unau- 
thorized attempts to appropriate American trade-marks, and the 
interested persons are notified. Several hundred of such notices 
have been sent out in recent months, and in some cases the rightful 
owners have been enabled to prevent the loss of their marks. It is 
impossible, however, to identify many of the marks examined, and 
frequently the owner of the mark can not be located. The time that 
necessarily elapses before the publications are received from the 
more remote countries like Argentina is often sufficient for the 

20 



local applicant to complete registration before any opposition can 
be brought. 

The only safe course to follow is to register trade-marks promptly 
in the name of the manufacturer in countries where any considerable 
business is carried on or anticipated. Even if exportation at the present 
time is limited by war conditions, the registration of the mark abroad 
may well be regarded as one of the fundamental steps of preparation for 
trade after the war. It is perhaps of even greater importance now than 
under normal conditions in view of the reported activity of enemy 
agents and others appropriating American trade-marks. The expense 
of registration usually represents only a reasonable outlay for the pro- 
tection of good will, and it is suggested that any article which is worth 
advertising abroad is worth protecting by means of trade-mark regis- 
tration. * * * Unless a company is represented abroad by agents of 
unquestionable competency it is generally preferable to have the entire 
business handled by an experienced attorney in the United States who 
has connections in foreign countries . * * *" 

Excerpts from other publications referring to this extremely impor- 
tant matter follow on pages 31 and 32. 

Importance of Registering Mark Exactly as Used. 

In a number of foreign countries the courts have distinguished be- 
tween a registered mark and an imitation thereof because of the fact that 
the mark as actually used upon the packages was not the same as the 
mark actually registered, and because the imitation presented distinguish- 
ing characteristics not found in one or both of the others, and unscrupu- 
lous traders taking advantage of this condition have been able to escape 
the penalties which would arise under the laws of other countries. 

This has been particularly true with respect to the South American 
countries. Efforts are being made to secure the correction of this evil, but 
so far without pronounced success. 

Manufacturers and traders should therefore see to it that their marks 
as actually used by them are placed upon the register. 

Registration by Classes. 

It is desirable for foreign registrations, where the same are not based 
upon the United States registration, that the same should be effected upon 
as wide a statement of goods, included within one general class, as pos- 
sible, so that even while owners may not be able to sue for infringement, 
if the mark is used on goods not of the same general description as those 
in which they are for the time trading, their broad registration acts to 

21 



prevent competitors from securing the registration of a similar mark in 
that class on the same or similar goods, and thus leaves the ground open 
for the owner's legitimate trade expansions. 

Moreover, this course saves the expense of constantly registering the 
mark for additional goods in such class. 

This is of particular advantage to owners who are continually in- 
creasing their lines of trade, for as their trade expands with the addition 
of new articles, which require separate registrations at home to fully 
protect the mark as applied thereto, their foreign registrations, if properly 
drawn, have covered the new articles in advance. 

Renewals of Registration. 

These can generally be obtained for successive terms indefinitely. 
Except as indicated in the notes following the ''Schedule of Charges" 
such renewals are granted for the same terms as the original registrations, 
after the same procedure by application, and at the same costs. 

Countries Having Trade-Mark Treaties With the United 

States. 

The following countries have entered into treaties or conventions 
with the United States for the reciprocal registration and protection of 
trade-marks: Austria- Hungary, Belgium, Denmark, France, Germany, 
Great Britain, Italy, Japan, Roumania, Russia, Servia, Spain. 

The United States is also a member of the International Union for 
the Protection of Industrial Property, of which twenty-nine countries 
are members, and of the Pan-American Convention, particulars as to 
which will be found in the following pages. 

The fact must be emphasized, however, that the "treaties or conven- 
tions" above specified, so far as citizens of the United States are con- 
cerned, only give them the right to apply for and obtain protection of 
their trade-marks in the respective treaty countries, a separate application 
being required in each country. 

The International Union gives a four months' right of priority for 
filing separate applications in the other member countries, to the owners 
of trade-marks who have regularly applied for registration thereof in the 
United States, this priority commencing from the filing date of the U. S. 
application. 



22 



Table Showing Countries Where Registration is Conclusive 
of Ownership, and Countries Requiring Proof of Regis- 
tration in Home Country as a Prerequisite to Registra- 
tion There. 



Registration 


Conclusive 


Require Proof of 






Conclusive of 


after Limited 


Registration in 


No Proof Required 


Ownership 


Time 


Home Country 






Argentine Republic 


Australia 


Austria 


Argentine Republic 


Japan (and Korea) 


Bolivia 


Brazil 


Bulgaria 


Australia 


Leeward Is. 


Chili 


Bulgaria 


Cuba 


Bahama Is. 


Liberia 


Costa Rica 


Denmark 


Denmark 


Barbadoes 


Luxembourg 


Cuba 


Great Britain 


Finland 


Belgian Congo 


Malta (and Gozo) 


Germany 


Mexico 


Germany 


Belgium 


Mauritius 


Guatemala 


Rhodesia 


(and Colonies) 


Bermuda 


Mexico 


Nicaragua 


Russia 


Greece 


Bolivia 


Morocco 


Norway 


Salvador 


(including Crete) 


Brazil 


Newfoundland 


Paraguay 


Spain 


Guatemala 


(butincreasedcost.) New Zealand 


Peru 


Uruguay 


Haiti 


British Guiana 


Nicaragua 


Portugal 




Honduras 


British Honduras 


Nigeria 


San Domingo 




Hungary 


British North Borneo 


» (including Lagos) 


Servia 




Manchuria 


Burmah 


Nyasaland 


Sweden 




Norway 


Canada 


Paraguay 


Turkey 




Panama 


Ceylon 


Peru 


Venezuela 




Portugal 


Channel Is. 


Philippine Is. 






(and Colonies) 


(Guernsey, Jersey) 


Porto Rico 






Russia 


Chili 


Rhodesia 






Servia 


China 


(Southern) 






Spain 


Colombia 


Roumania 






Sweden 


Costa Rica 


St. Lucia 






Switzerland 


Curagao 

Cyprus 

Dutch East Indies 

East African 

Protectorate 
Ecuador 
Egj'pt 
Eritrea 
Falkland Is. 
Federated Malay 

States 
Fiji Is. 
France 

(and Colonies) 
Gambia (British) 
Gibraltar 

Gold Coast Colony 
Great Britain 
Grenada 
Holland 


St. Vincent 
Salvador 
San Domingo 
Seychelles Is. 
Spain 

Sierra Leone 
South Africa 

(Union) 
Straits Settlements 
Surinam 

(Dutch Guiana) 
Trinidad 

(and Tobago) 
Tunis 
Turkey 
Uruguay 

(special) 
Venezuela 
Virgin Is. 
Zanzibar 



23 



TRADE-MARK CONVENTIONS. 

The Berne Trade-Mark Convention. 

The following thirteen countries are members of this Convention, viz. : 
Austria, Belgium, Brazil, Cuba, France, Holland, Hungary, Italy, Mexico, 
Portugal, Spain, Switzerland, Tunis. 

The United States is not a member, and no advantage can be taken 
of the Convention by American citizens or corporations, nor even by 
branches of American business houses in such countries. Nor can inter- 
national registrations effected under the Convention be assigned to citizens 
or corporations of non-member countries. 

This Convention provides that upon payment of a single fee of $20 
to the Central Bureau at Berne, the rights acquired by a registration ob- 
tained in one of the countries of the Convention are extended to cover 
the remainder of the countries belonging to the Convention. 

It should be pointed out in this connection that American manufac- 
turers and traders who have not registered their marks in these countries 
are exposed to the danger of having their marks appropriated by trade- 
mark pirates and registered in these countries under the Convention, so 
that the rightful owners may find that they are debarred from the use of 
their own marks there, their goods being liable in such case to confiscation 
on arrival at ports of entry in these countries, while they may be con- 
demned to pay damages for infringement of their own marks, which will 
be owned by enemy rivals in such countries. The only remedy is by 
prompt registration of all useful marks before trade rivals have an op- 
portunity of misappropriating them. 

The International Union for the Protection of Industrial 

Property. 

The following twenty-nine countries are members of this Union, viz. : 
Australia, Austria, Belgium, Brazil, Ceylon, Cuba, Curacao, Denmark and 
Faroe Islands, Dutch East Indies, France and Colonies, Germany and 
Colonies, Great Britain, Holland, Hungary, Italy, Japan and Korea, 
Mexico, New Zealand, Norway, Portugal, San Domingo, Servia, Spain 
and Colonies, Surinam,, Sweden, Switzerland, Trinidad and Tobago, 
Tunis, United States. 

Registration in one of the countries belonging to the Union does not 
have the effect of affording protection in the other countries of the Union 
without separate registration in each country. It is provided, however, 
that an owner who has regularly filed his application for registration in 
his own country enjoys a period of priority of four months from the date 
of such application, for filing his application for registration in the other 
Union countries. 

24 



Pan-American Convention. 

This Convention has been ratified by the United States and the fol- 
lowing countries: Costa Rica, Cuba, Guatemala, Honduras, Nicaragua, 
Panama, and a Central Bureau for registrations, and the transaction of 
necessary business in connection therewith, is being organized in Havana, 
where it will be located. 

It is, however, impossible to fix a date when the Bureau will be 
ready for business, as the necessary funds for its operation will only be 
provided after appropriation of their proportionate shares by the legis- 
latures of the dififerent countries, and so far this has not been done. 

This Convention has not been ratified by, and will not apply to: 
Mexico, Hayti, San Salvador, so that even after the Convention becomes 
operative, separate registrations will be required in these countries. 

A Bureau is proposed to be established at Rio de Janeiro to cover 
the Southern group of republics, but the Convention has not been ratified 
as yet by a sufficient number of the Southern countries to bring it into 
operation. It will probably be some time before this is done, and a still 
longer time will probably elapse before the Bureau is in working condition. 

While the purpose of the Convention is, of course, to provide a 
simple and inexpensive method of effecting the registration of marks at 
the Central Bureaus, such registrations to be efifective in all the countries 
adhering to the Convention, it is impossible at this time to say how far it 
will be safe to rely on such international registrations, and in the absence 
of decisions upon the point, and upon the point of infringement, to deter- 
mine what measure of protection will be afforded thereby. 

In any case, until the Southern republics, which up to now have been 
the principal piratical field for unscrupulous traders, have ratified and 
become bound by the Convention, it is most essential for manufacturers 
and traders to register their marks under the laws of each of these coun- 
tries separately. 

SCHEDULE OF CHARGES. 

Foreign Registrations. 

The charges named below cover the usual inclusive cost of making 
application for the registration of trade-marks in the countries named, 
but are necessarily subject to change without notice, as there are frequent 
changes in governmental fees, stamp duties, and other costs. 

All charges are payable as follozvs: One-half thereof on giving the 
order; the remaining one-half when the applications are in readiness for 
transmission for filing. 

CHents are expected to provide the electrotypes and copies of the 
mark required for filing, as well as copies of the latter for the filing 

25 



agent's use in each country. Electrotypes should not measure more than 
ij4, inches in either length or width, and should be blocked on wood, 
otherwise extra costs are incurred for which I must charge. 

The charges include preparation of all documents ; legalization of all 
powers of attorney where necessary; procurement of certified copies of 
U. S. registration, authentication of same at Interior and State Depart- 
ments and subsequent legalization of same; making drawings, when re- 
quired; payment of government filing, registration and stamp fees; and 
attorney's fees for prosecuting the application and obtaining registration 
in uncontested cases. 

The charges do not include special services in contested cases for 
translations, arguments, amendments, oppositions, appeals and like special 
actions, the charges for which cannot be determined in advance, but which 
will be fair and reasonable for the services rendered. 

Notes : In the following schedule the figures following the names of 
countries refer to the notes following the schedule, to which reference 
should be made to understand the special practice in such countries. 



COUNTRY 

Charge 

North America 

Canada (Specific) (i) $45-00 

Canada (General) (i) SS.oo 

Mexico (2) 37.50 

Newfoundland 50.00 

Europe 

Austria 35.00 

Austria and Hungary 50.00 

Belgium 36.00 

Bulgaria 73.50 

Channel Is. — Guernsey 37-00 

Channel Is. — Jersey 37.00 

Denmark 65.00 

Finland 38.00 

France and Colonies 34.00 

Germany and (Colonies 45.00 

Gibraltar (Adv.) 60.00 

Great Britain 30.00 

Greece (and Crete) 70.00 

Holland 50.00 

Hungary 35.00 

Hungary and Austria. 50.00 

Italy 50.00 

Luxemburg 37.00 

Malta and Gozo 42.00 

Norway 50.00 

Portugal 36.00 

Roumania (3) 45.00 

26 



Term 
Years 


Copies of 

Mark 
Needed 


Electro- 
types 
Required 


24 


5 


None 


Unlimited 


5 


None 


20 


15 


I 


Unlimited 


5 


None 


10 


10 


I 


10 


20 


2 


Unlimited 


6 


I 


10 


5 


I 


14 


6 


None 


14 


6 


None 


ID 


4 


2 


ID 


5 


2 


15 


6 




10 


20 




10 


4 




14 


6 




10 


6 




20 


6 




10 


10 




10 


20 




Unlimited 


6 




10 


6 




14 


6 




10 


ID 




10 


12 




15 


10 


None 



COUNTRY 

Charge 

Russia $65.00 

Servia 105.00 

Spain and Colonies (4) 55-00 

Sweden 65.00 

Switzerland 43-00 

Turkey 105.00 

South America 

Argentine 65.00 

Bolivia 75-00 

Brazil, on U. S. Reg'n. (5) 72.00 

Brazil, no U. S. Reg'n. (5) 120.00 

British Guiana 50.00 

Chile (21 ) 55.00 

Colombia 100.00 

Ecuador 80.00 

Falkland Is - 65.00 

Panama 100.00 

Paraguay 68.00 

Peru (6) 62.00 

Surinam (Dutch Guiana) 41.00 

Uruguay 84.00 

Venezuela (7) 55-00 

Central America 

British Honduras (Adv.) 52,00 

Costa Rica (8) 58.00 

Guatemala (9) 65.00 

Honduras (10) 85.00 

Nicaragua 65.00 

Salvador (11) 75-00 

West Indies 

Bahamas 48.00 

Barbados (12) 42.00 

Bermuda 48.00 

Cuba 55-00 

Curagao (Dutch W. I.) 53-00 

Grenada (Adv.) 45-00 

Haiti 35.00 

Jamaica 60.00 

Leeward Is 50.00 

Porto Rico (Registration) 41.00 

Porto Rico (filing copy U. S.) (13) 25.00 

St. Lucia (Adv.) 47-00 

St. Vincent (Adv.) 47-00 

Trinidad and Tobago 60.00 

Virgin Is 43.00 

Australasia 

Australian Commonwealth 50.00 

Fiji Is 62.00 

New Zealand 40.00 

27 





Copies of 


Electro- 


Term 


Mark 


types 


Years 


Needed 


Required 


10 


60 


I 


10 


6 


I 


20 


20 


I 


10 


6 


2 


20 


5 


I 


15 


5 


None 


10 


8 


I 


10 


6 


I 


15 


6 


None 


15 


6 


None 


14 


6 


I 


10 


6 


None 


20 


16 


I 


20 


26 


I 


14 


10 


I 


10 


6 


I 


10 


5 


I 


10 


12 


I 


20 


6 


I 


10 


5 


I 


30 


6 


I 


10 


6 


I 


15 


6 


I 


10 


6 


I 


Unlimited 


10 


I 


10 


10 


I 


20 


25 


I 


14 


6 


I 


Unlimited 


6 


I 


14 


5 


I 


15 


30 


I 


20 


6 


I 


10 


6 


I 


Indefinite 


5 


None 


14 


15 


I 


14 


10 


I 


20 


8 


None 


20 


None 


None 


10 


4 


I 


10 


4 


I 


14 


4 


I 


U. S. Term 


10 


I 


14 


25 


I 


7 


6 


I 


14 


6 


I 



COUNTRY 

Charge 

Asia 

British North Borneo $67.00 

Burmah 41.00 

Ceylon 57-0O 

China (Shanghai) (14) 30.00 

China (Tientsin) ( 14) 35.00 

Cyprus 67.00 

Dutch East Indies 45.00 

Federated Malay States (Adv.) (15).. 57.00 

Hong Kong 100.00 

India (British) (16) 37.00 

India (Upper) (17) 37.00 

Japan and Korea 48.00 

Manchuria 48.00 

Philippine Is. (Registration) 52.00 

Philippine Is. (Deposit) (18) 26.00 

Portuguese Colonies (19) 

Macao 36.00 

Portuguese India 36.00 

Timor 36.00 

Siam 65.00 

Straits Settlements 53.00 

Africa 

Belgian Congo 40.00 

East Africa Protectorate 43.00 

Egypt A Registration (20) 36.00 

Egypt B Registration (20) 60.00 

Egypt C Registration (20) 82.00 

Eritrea 55.00 

Gambia, British 54.00 

Gold Coast Colony and Ashanti 55.00 

Liberia 62.00 

Mauritius 49.00 

Nigeria, Southern, and Lagos 62.00 

Nyasaland, British 47.00 

Portuguese Colonies (19) 

Angola 36.00 

Cape Verde 36.00 

Guinea 36.00 

St. Thomas and Prince Is 36.00 

East Coast, Government Territory... 36.00 

East Coast, Nyasa Co.'s Territory. . . 36.00 

East Coast, Mosambique Co.'s Terr. . . 36.00 

Rhodesia, Southern 67.00 

Seychelles Is 46.00 

Sierra Leone (Adv.) 61.00 

South Africa (Union) 57.50 

Zanzibar 70.00 



Term 
Years 


Copies of 
Mark 
Needed 


Electro- 
types 
Required 


Unlimited 


6 


I 


Unlimited 


S 


None 


14. 


6 


I 


Unlimited 


10 


None 


Unlimited 


10 


None 


14 


10 


I 


20 


6 


I 


10 


10 


I 


14 


6 


I 


Unlimited 


5 


None 


Unlimited 


5 


None 


20 


8 


I 


Unlimited 


5 


I 


30 


10 


None 


20 


None 


None 


10 


None 


None 


10 


None 


None 


10 


None 


None 


12 


12 


None 


14 


6 


I 


Unlimited 


6 


I 


14 


6 


None 


10 


5 


I 


10 


10 


2 


10 


15 


3 


Unlimited 


6 


I 


14 


6 


I 


14 


6 


I 


14 


6 


I 


Unlimited 


5 


I 


14 


5 


I 


14 


6 


I 


10 


None 


None 


10 


None 


None 


10 


None 


None 


10 


None 


None 


10 


None 


None 


10 


None 


None 


10 


None 


None 


14 


6 




14 


6 




10 


6 




14 


10 




14 


6 





28 



Notes. 

(Adv.) In a number of countries there is no provision for registra- 
tion, but the laws provide penalties for false marking. It is usual in these 
countries to establish evidence of ownership, and to warn the public 
against imitating by advertising the mark in the official or other local 
papers. 

1. Canada. A Specific mark is one used upon specified goods in a single 
class ; a General mark is one that is used by the owner for all trade 
purposes. 

2. Mexico. Marks used by merchants must contain the notice "Marca 
de Comercio, Registrada," or the abbreviation "AI. de C, Rgtrda" 
and the number and date of registration. Marks used by manufac- 
turers, traders, etc., must contain the notice "Marca Industrial Regis- 
trada," or the abbreviation "M. Ind. Rgtrda" and the number and 
date of registration. If a mark consists of or contains words or 
letters, it must include as a conspicuous feature the name of the 
owner and the place where his establishment is located. 

3. Roumania. Foreigners may effect registration only when they are 
citizens of countries having treaty relations with Roumania on the 
subject. The United States has such treaty relations. 

4. Spain. Taxes are payable every five years. My charge for effecting 
such payments is: fifth year, $10.00; tenth year, $12.50; fifteenth 
year, $15.00. 

5. Brazil. The smaller charge applies when the mark has been regis- 
tered in the home country and a copy of the certificate of registration 
is filed with the application ; the larger charge applies when an inde- 
pendent application is made without reference to a prior registration. 
When the certified copy of the home registration and the certificates 
attached thereto exceed 500 words, a charge of $3.00 per 100 words is 
made for additional translation and publication. 

6. Peru. Firms and corporations are required to furnish evidence of 
their legal existence. 

7. Venezuela. While the term of registration is thirty years, the pro- 
tection ceases at the end of the term of the prior registration in the 
home country. 

8. Costa Rica. Successive renewals may be made for ten years each. 

9. Guatemala. Registration is granted to foreigners only when they are 
citizens of countries having treaty relations with Guatemala upon the 
subject. The United States has such treaty relations. Guatemala is 
also a member of the Pan-American Convention. 

10. Honduras. Applicant must have, or appoint, a local agent for the 
sale of his goods. 

29 



11. Salvador. Under a recent decree, taxes are now payable for each 
year of the duration. The charge named includes the taxes for the 
first five years. My charge is $5.00 per year for effecting payment 
of each year's tax thereafter. 

12. Barbados. To obtain protection for a mark registered in a country 
adhering to the International Union, it is sufficient to advertise such 
registration in Barbados; otherwise the mark must be registered 
there. The cost is the same in either case. 

13. Porto Rico. Protection may be obtained in two ways: (a) by in- 
dependent registration; or, (b) by filing a certified copy of the U. S. 
certificate of registration. 

14. China. Marks may either be registered at the Consulate and Customs 
Bureau at Shanghai, or the Consulate and Customs Bureau at Tien- 
tsin, or at both places, as desired. 

15. Federated Malay States. These include Negri Sembilan, Pahang, 
Perak, and Selangor. 

16. India. No registration act is in force, but an act exists for the 
punishment of false marking, and it is the practice to record marks 
in the Office for the Registration of Deeds. 

17. India (Upper). No registration law exists, but the Chamber of Com- 
merce has established an unofficial register. 

18. Philippine Islands. Protection may either be secured by an inde- 
pendent registration or by the deposit of a copy of an U. S. certificate 
of registration. 

19. Portuguese Colonies. Registration must first be effected in Portugal, 
and protection thereafter extended to the desired Colony or Colonies. 

20. Egypt. Registration may be made at the Courts either of (a) Cairo, 
Alexandria or Mansurah, or at the Courts of (b) two, or (c) all of 
said places. 

21. Chili. To manufacturer's marks should be added the initials "M. de 
F.," and to all commercial marks "M. C," as notice of registration. 




30 



(Evening Telegram, June, 1918.) 

LEADERS UNITE AGAINST PIRATES 
OF TRADE-MARKS 



Latin-American Countries Interested in Protecting American 
Trade After War 



To Prevent Any Fraudulent Registration, United States Aim 



Washington, Saturday. — The coming of Dr. Mario Diaz Irizar, of Cuba, to 
the United States for conference with business men and other officials of the Pan- 
American Trade-Mark Bureau of which Dr. Irizar is director in North America, is 
expected to result in greatly furthering the protection of manufacturers who are 
endeavoring to increase their export trade in Latin-American countries. 

The matter of trade-marked articles in Latin America has caused great trouble 
to business men, and has long offered a wide field for unscrupulous adventurers 
and notably for Germans, some of whom have secured large amounts of money 
from American manufacturers by methods closely resembling blackmail. Patents 
and copyrights come under the same head, and efforts are being made by the Pan- 
American Trade-Mark Bureau to correct the evils that have grown up in pirating 
the good names of reliable manufactured articles. 

Denounces Pirates. 

The purpose of the pirates is never to manufacture, according to William C. 
Wells, chief statistician of the Pan-American Union. 

"They simply register the trade-mark," he said to-day, "and thereafter control 
the selling of the article in the country in which they have registered it. That is 
all that is necessary under the laws of all the Latin-American countries. 

"The object of the Pan-American Trade-Mark Bureau is to prevent this 
fraudulent registration. All the countries of both Americas are interested in the 
bureau, which has branches in North and South America, The modus operandi of 
the man who registers trade-marks is simple. All he has to do is to find some 
article that is being advertised extensively in the United States and of which there 
is a probability that it will be introduced in his country. 

Trickster Gets Royalty. 

"The registration fee is usually small, and when the trickster has made his 
registration he sits back and waits for the business to come to him. When the 
manufacturer comes to introduce his article in that country he finds that he has 
to deal with the man who registered it. Sometimes he has to pay a big royalty or a 
large lump sum to be permitted to operate there. 

"It is to correct this state of affairs that the bureau was organized." 
It was said by an official in Washington that a United States manufacturer 
can easily circumvent the trade-mark pirates by changing the trade-mark when he 

31 



is ready to introduce the article in any country where it has been fraudulently 
registered. 

"But these manufacturers are loath to do this," said the official. "They think 
that the trade-mark is the valuable thing about the article. They are also sentimen- 
tal about it. As a matter of fact the trade-mark is frequently a drawback instead 
of an advantage. English words used in trade-marks are often unpronounceable 
in Spanish, and the consumer has to make known his wants by signs or nicknames. 
If the manufacturer would change his trade-mark so that the Latin-American could 
pronounce it, he would circumvent the pirates and popularize his article. And the 
intrinsic value of the goods would establish the market for the manufacturers." 



SPECIAL. 



I make a practice of advising my correspondents regard- 
ing important developments and changes in the law and 
practice in the United States and foreign countries with 
reference to patents and trade-marks. 

I make no charge for this service. 

I will be glad to add your name to my mailing list if you 
care to have this information. 

WILLIAM E. RICHARDS, 

Attorney and Counsellor at Law, 

277 Broadway, 
New York. 



3? 



LIBRARY OF CONGRESS 



019 970 282 8 



